Saguna Food-Und Non-Food-Vertriebs GmbH v Planet Health Pty Limited

[2010] ATMO 26

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Saguna Food-Und Non-Food-Vertriebs GmbH to Trade Mark Application 1143658(5) - Q silica - in the name of Planet Health Pty Limited

Delegate:	Debrett Lyons
Representation:	Applicant: Julia Baird SC, instructed by Pigott Stinson, Solicitors Opponent: No representation
Decision:	2010 ATMO 26 S. 52 opposition – grounds of opposition under ss. 41 and 44 considered. Neither ground established and opposition fails. Endorsement under s. 41(5) imposed.

Background

1. On 27 October 2006 (‘the Priority Date’), Planet Health Pty Limited (‘the Applicant’) filed trade mark application number 1143658 for the word mark ‘Q silica’ (‘the Trade Mark’) in respect of ‘nutritional products, herbal remedies including natural tonics, dietary supplements and skin care, each for human use’ in class 5 of the Register.

2. The application was examined, found in order for acceptance and advertised as accepted for possible opposition, after which Saguna Food-Und Non-Food-Vertriebs GmbH (‘the Opponent’) filed a Notice of Opposition to registration of the Trade Mark under section 52 of the Trade Marks Act 1995 (‘the Act’). 

3. Both parties served and filed evidence.  The Opponent’s evidence in support of the opposition comprises the statutory declaration of Amanda Caldwell made 28 February 2008 together with exhibits AC-1 to AC-7.

4. The Applicant’s evidence in answer comprises the statutory declaration of Peter Patrick Harwood made 29 September 2008 with exhibits A-F and Confidential A to Confidential D.

5. The Opponent did not serve any evidence in reply.

6. The Opponent asked to be heard and the matter came before me, Debrett Lyons, a delegate of the Registrar of Trade Marks, on 15 March 2010, in Sydney.  At the Hearing, the Applicant was represented by Julia Baird SC, instructed by Pigott Stinson, Solicitors.  The Opponent was not represented and did not provide any written submissions.

   Grounds of Opposition

7. The Notice of Opposition raises virtually every ground of opposition available to the Opponent under the Act. To succeed, the opponent bears the onus of establishing at least one of those grounds on the balance of probabilities[1].

   [1] Pfizer Products Inc v Karam (2006) 70 IPR 599) per Gyles J.; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891 per Sundberg J.

8. Despite the broad reach of the Notice of Opposition, I have reviewed the evidence and in the absence of submissions from the Opponent, I consider that the Opponent’s evidence is only potentially relevant to its grounds of opposition under sections 41 and 44 of the Act. I treat the remaining grounds of opposition as having not been established.

   Submissions and Reasoning

   Section 41: Not capable of distinguishing

9. The operation of section 41 was explained by Branson J in Blount Inc v Registrar of Trade Marks [1998] 40 IPR 498 where her Honour said:

   Subsections (3) to (6) of s 41 of the Act are designed to control the process by which the Registrar is to reach a conclusion as to whether the trade mark for which registration is sought is capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be registered ("the designated goods or services"). If the trade mark is not so capable, the application for its registration must be rejected (s 41(2)). Subsection (3) requires the Registrar first to "take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons". Having taken such matter into account, it is theoretically open to the Registrar to conclude:

   (a) that the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons and capable, on that basis alone, of so distinguishing the designated goods or services; or

   (b) that the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; or

   (c) that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, but there is uncertainty, on that basis alone, that the trade mark is actually capable of so distinguishing the designated goods or services.

   The structure of s 41 of the Act dictates that if the Registrar reaches conclusion (a) above, then he or she will decide the question whether or not the trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons by reaching the answer that it is so capable by reason of its inherent adaptability to distinguish (s 41(2) and (3)). The Registrar will, in such circumstances, be required, by reason of the terms of s 33(1) of the Act, to accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application.

   If the Registrar reaches conclusion (b) or (c) above, he or she is, within the meaning of s 41(4) "unable to decide the question". That is, he or she is unable, simply by taking into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services, to answer the question whether or not the trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons.

   If the Registrar reaches conclusion (b) above, then the provisions of paragraphs (a) and (b) of s 41(6) are brought into operation. If the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date of the application, the trade mark does distinguish the designated goods or services as being those of the applicant, the Registrar will not reject the application pursuant to s 41(2). The Registrar will, in such circumstances, accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application (s 33(1)). If the applicant fails to establish that because of the extent to which the applicant has used the trade mark before the filing date of the application, the trade mark does distinguish the designated goods or services as being those of the applicant, the Registrar must reject the application pursuant to s 41(2).

   If the Registrar reaches conclusion (c) above, then the provisions of paragraphs (a), (b) and (c) of s 41(5) are brought into operation. If the Registrar, having considered the combined effect of the matters listed in subparagraphs (i), (ii) and (iii) of s 41(5)(a), is satisfied that the trade mark does or will distinguish the designated goods or services as being those of the applicant, he or she will not reject the application pursuant to s 41(2). The Registrar will, in such circumstances, accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application (s 33(1)). If the Registrar, having considered the combined effect of the matter listed in subparagraphs (i), (ii) and (iii) of s 41(5), is not satisfied that the trade mark does or will distinguish the designated goods as being those of the applicant, the Registrar must reject the application (s 41(2)).

10. The starting point is thus section 41(3) and an assessment of the extent to which the Trade Mark is inherently adapted to distinguish the goods of the application from the like goods of other persons. Whether a mark is inherently adapted to distinguish has been said to depend on whether other traders are likely, in the ordinary course of their business and without any improper motive, to desire to use the same mark, or some mark closely resembling it, upon or in connexion with their own goods’[2].

    [2]W & G du Cros Ltd’s Application (1913) 30 RPC 216 at 227; approved in Clark Equipment Co. v Registrar of Trade Marks (1964) 111 CLR 511, Kitto J at 514.

11. Mr Harwood is the Managing Director and a director and secretary of the Applicant.  His declaration evidences that the Applicant is a supplier of complementary medicines and beauty products.  Mr Harwood accepts that the word ‘silica’ refers to a naturally occurring chemical compound (more formally known as silicon dioxide).  He also accepts that a number of traders use the word to describe the constituency of their products.

12. Ms Baird however put it to me that the Trade Mark is to be considered as a whole and that the ordinary word ‘silica’ is distinguished by the addition of the initial component ‘Q’, which confers “individuality, recognition and distinctiveness”. Ms Baird submitted that, taken as a whole, the Trade Mark was inherently adapted to distinguish the Applicant’s goods from the like goods of other traders and so the Trade Mark was acceptable for registration under section 41(3) of the Act.

13. Ms Caldwell is an employee of the trade mark attorneys for the Opponent.  Her declaration evidences a search of the Australian Trade Marks Office database and the results of various internet searches.  The thrust of this evidence is intended to show that silica is a naturally occurring chemical compound, that certain trade mark applications consisting of, or including, the word silica never achieved registration, and that silica (or silica gel) has been used in certain products which would fall within the ambit of the goods claimed by the Applicant in its application.

14. The Applicant’s goods specification includes goods which may or may not actually contain silica.  Even for those goods which might so do, there is no evidence that silica is the only or primary active ingredient.  For those few goods where there is evidence that the Applicant promotes the product because it contains silica, then I still regard the Trade Mark, taken as a whole, to have a degree of inherent adaptability to distinguish the Applicant’s goods from the similar goods of other traders.  ‘Q’ is an uncommonly used letter.  It seems to me to be an arbitrary letter when used in relation to the goods.  It is not the name or symbol or abbreviation of any relevant substance, nor does it appear to describe any character or quality of the designated goods. 

15. I therefore paused to consider carefully Ms Baird’s submission that the Trade Mark was acceptable for registration under section 41(3) but, even considered in its totality, I feel that I am unable to decide the question of whether the Trade Mark has the requisite inherent adaptability to distinguish the goods of the application from the like goods of other persons.

16. Accordingly, the registrability of the Trade Mark falls for consideration under section 41(5). I must now consider the extent to which the Trade Mark is inherently adapted to distinguish, together with the Applicant’s use or intended use of the Trade Mark and any other circumstances. In that regard, Ms Baird drew my attention to the evidence from Mr. Harwood that, from first use of the Trade Mark in December 2006 until 30 June 2007, wholesale sales of goods bearing the Trade Mark exceeded $1.5 million; between 1 July 2007 and 30 June 2008 total sales increased to more than $2.7 million; that goods bearing the Trade Mark were sold in more than 1,300 health stores and pharmacies throughout Australia; and that the associated advertising expenditure had been approximately $760,000. That use of the Trade Mark, coupled with its not insignificant inherent ability to distinguish the Applicant’s goods, causes me to decide that it is most eligible for registration under section 41(5) of the Act.

17. The ground of opposition as I perceive it to be based on section 41 has not been established. I decide however that, should the opposition fail, registration of the Trade Mark should be subject to an endorsement indicating that it was accepted under section 41(5).

    Section 44: Earlier trade mark

18. To establish its opposition under section 44, the Opponent must show all of the following:

    ·a trade mark (or trade marks), either registered or pending, in the name of a person or persons other than the Applicant, and in relation to which the Trade Mark is either substantially identical or deceptively similar;

    ·the trade mark(s) in the name of the other person(s) must be in respect of similar services (goods) or closely related goods (services); and

    ·the priority date of the trade mark(s) of the other person(s) is (are) earlier than the Priority Date.

19. The Opponent’s evidence includes two tables giving redacted information about what are described as either “trade marks containing the word SILICA, other than those owned by [the Applicant] pending and registered” or “trade marks including the word SILICA which had never proceeded to registration”.

20. The latter tabled trade marks I can ignore to the extent that they might be related to a section 44 ground of opposition for the reason that they are neither pending nor registered trade marks.

21. The former tabled trade marks include trade marks which postdate the Priority Date.  I therefore do not need to consider them.  The same table includes trade marks filed in classes 1, 10, 25 and 33 and in relation to goods so disparate from those of the application that I need pay them no further regard.  Indeed, it is only two of the trade marks having earlier priority dates and covering potentially relevant goods, namely 256633 SILICAP and 641047 KERVRANS SILICA, which arguably merit consideration.  Neither of those trade marks is substantially identical to the Trade Mark and in my estimation neither of those trade marks could reasonably be considered deceptively similar to the Trade Mark.  SILICAP conveys the notion of a ‘cap’ or ‘capsule’ or form of tablet.  No similar meaning is conveyed by the Trade Mark.  In the trade mark KERVRANS SILICA, the word KERVRANS is as clear a differentiator as is the letter Q in the Trade Mark.  The only commonality between the marks is the term SILICA, of which I have already written. 

22. For the Opponent to succeed under section 44, it must point to a probability of deception or confusion which must be finite and non-trivial. There must be a real tangible danger of deception and confusion occurring. A mere possibility is not sufficient[3].  This remaining ground of opposition also fails.

    Decision

23. Section 55 of the Act provides:

    55Decision

    (1)Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:

    (a)to refuse to register the trade mark; or

    (b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

    having regard to the extent (if any) to which any ground on which the application was opposed has been established.

    Note:For limitations see section 6.

    (2)Without limiting subsection (1), if the application was opposed on the ground specified in paragraph 62(a) (that the application, or a document filed in support of the application, was amended contrary to this Act), the Registrar may revoke the acceptance of the application and examine the application again under section 31.

    Note:For examine and this Act see section 6.

24. The Opponent has not established a ground of opposition and so its opposition is unsuccessful. Application 1143657 may proceed to registration after one month from the date of this decision subject to an endorsement that the Trade Mark was accepted under the provisions of section 41(5). If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been discontinued or registration is otherwise ordered by the court.

    Costs

25. The Applicant requested its costs in the matter in the event that it was successful. The opposition having failed, I award costs against the Opponent calculated in accordance with the official scale.

    Debrett Lyons
    Hearing Officer
    Trade Marks Hearings
    8 April 2010